Delhi District Court
Hamdard National Foundation India And ... vs Klm Pharma Seema Aggarwal Proprietor on 4 June, 2025
IN THE COURT OF SH. ANIL KUMAR SISODIA: DISTRICT
JUDGE (COMMERCIAL COURT)-04, CENTRAL, EXTN.
BLOCK TIS HAZARI COURTS, DELHI
CS (Comm.) No. 1068/2023
HAMDARD NATIONAL FOUNDATION (INDIA)
(Through Javed Akhter, Authorized Signatory)
Hamdard Building 2A/3, Asaf Ali Road,
New Delhi-110002
.......PLAINTIFF NO.1
HAMDARD LABORATORIES (INDIA)
(Through Javed Akhter, Authorized Signatory)
(Medicine Division)
2A/3 Asaf Ali Road,
New Delhi-110002
......PLAINTIFF NO.2
Versus
KLM PHARMA
(Through Seema Aggarwal, Proprietor)
C-5/128, First floor,
Sector-5, Rohini, North West Delhi
New Delhi-110089
Also, at:
First Floor, 112, Pkt-J
Vardhman Mall, Bawana Industrial Area,
North Delhi, New Delhi-110039
.... DEFENDANT
Date of filing of the suit : 21.07.2023
Date of reserving judgment :28.05.2025
Date of judgment : 04.06.2025
CS(COMM)1068/2023 Hamdard National Foundation India & Anr. Vs. KLM Pharma 1/36
JUDGMENT
1. This is a suit for permanent injunction restraining infringement of registered trademark and trade dress 'SAFI,' passing off, unfair competition, dilution of trademark, rendition of accounts of profit, delivery up, damages etc. against the defendant.
2. Briefly stated, facts of the case are that Plaintiff nos. 1 and 2 are part of the well-known and reputed HAMDARD GROUP. HAMDARD GROUP is engaged in the business of manufacturing and selling inter alia, a large variety of Unani and Ayurvedic medicines for over 100 years and holds large number of registered trademarks, copyright, and patent protections. Some of the well- known products being manufactured and marketed by plaintiffs under the trademark/house mark HAMDARD include SAFI, ROGAN BADAM SHIRIN, SUALIN, JOSHINA, CINKARA, NAUNEHAL, HAMDARD GRIPE WATER etc. The plaintiff in order to maintain highest standards of manufacturing has set up one of the world's largest Unani GMP and ISO 9001 certified laboratories. The quality control and quality assurance departments at the plaintiff's company ensure the right quality of raw materials and strictly control the processes with modern technologies in order to manufacture the efficacious medicines. The plaintiffs are an active member of department of Ayurveda, Yoga & Naturopathy, Unani, Siddha, and Homoeopathy (Ayush), Govt. of India.
CS(COMM)1068/2023 Hamdard National Foundation India & Anr. Vs. KLM Pharma 2/36
3. It is stated that the renowned Unani medical product SAFI is a product that is sold under the registered trademarks of plaintiff no.1 used by plaintiff no.2 under a license agreement. SAFI is an Unani medicine that serves as a natural blood purifier and is popular herbal remedy for skin disease such as acne vulgaris, boils, skin rashes, blemishes, urticaria etc. SAFI also helps cure nose bleeding, cures constipation, correct indigestion and improves complexion.
4. It is stated that plaintiff no.2 has the exclusive rights to use the said trademarks. By virtue of the deed of agreement dated 11.08.1975, the plaintiff no.1 has licensed the aforesaid registered trademarks to plaintiff no.2. Plaintiff no.2 uses the said trademarks under strict control and supervision. The plaintiffs along have the right under the statutory provisions of the Copyright Act to make copies of their label/packaging/cartons and distribute them to the public, make adaptation of the same etc.
5. It is stated that SAFI is used as an effective and trusted remedy against rectifying blood impurity, skin eruptions, pimples and boils, heat rashes and itching nose bleedings, chronic and temporary constipation, measles, burning sensation in urination, general lassitude and also as a diuretic and a preventive for conditions arising due to change of season. It is stated that the Plaintiffs have been continuously and extensively using the trademark SAFI since, its adoption in the year 1939. Thus, by virtue of long, continuous, CS(COMM)1068/2023 Hamdard National Foundation India & Anr. Vs. KLM Pharma 3/36 extensive, and uninterrupted use for the past more than 75 years, the trademark SAFI has been exclusively associated with the Plaintiffs in India as well as abroad.
6. It is stated that the use of the trademark identical or deceptively similar to SAFI and its trade dress by any third-party amounts to infringement and passing off and violation of the Plaintiff's rights in the said mark. It is stated that the Plaintiffs alone have the right under the statutory provisions of the Copyright Act to make copies of their label/packaging/cartons and distribute them to the public, make adaptation of the same etc. and any party who substantially copies the features of the Plaintiff's label/packaging/cartons infringes the copyright in the artistic work of the label/packaging/cartons belonging to the Plaintiffs. The status and reputation of the trademark SAFI is un-disputable.
7. It is stated that the Plaintiffs' products under the mark SAFI have been widely promoted inter alia through print and audio-visual media including television programmes and social networking websites, advertisements, articles, and write-ups appearing in leading newspapers, magazines, journals, etc. all of which enjoy a wide viewership, circulation, and readership all over the India. It is stated that the extensive use of the mark SAFI in relation to goods/ services of the Plaintiffs Group over the years has created tremendous goodwill and reputation of the marks in favour of the Plaintiffs and CS(COMM)1068/2023 Hamdard National Foundation India & Anr. Vs. KLM Pharma 4/36 the marks have, thus, acquired the status of a well-known mark.
8. It is stated that the Plaintiffs are also the owner of the website https://www.hamdard.in. Apart from direct retail, the Plaintiffs operate in e-market sector through its dedicated website https://www.hamdard.in as well as substantial presence and tie-ups with major online platforms.
9. It is stated that the defendant is engaged in the business of manufacturing, selling, and marketing Unani pharmaceutical products under the trademark and getup SAIFI. The Defendant KLM Pharma is selling the products under the impugned trademark SAIFI on the online e-commerce platform India Mart having the following URLs; https://www.indiamart.com/proddetail/200-ml-saifi-syrup- 22149176391.html and https://www.indiamart.com/proddetail/100- ml-saifi-syrup-22588942373.html?smp_widget=1. The plaintiff came to know in February 2022 that defendant has been using the mark SAIFI for its blood purifier which is identical/ deceptively similar to the well-known trademark SAFI belonging to the plaintiff. It was stated that the trademark adopted by the defendant is deceptively, phonetically and visually similar to the registered trademark of the plaintiff trademark SAFI and its dress up is also deceptively similar to the trade dress used by the plaintiff. The adoption by the defendant of mark SAIFI and its trade dress has no logical source other than imitation of the trademark and trade dress of the plaintiff. The CS(COMM)1068/2023 Hamdard National Foundation India & Anr. Vs. KLM Pharma 5/36 defendant adopted the impugned trade mark much later than the adoption of the trademark SAFI by plaintiff in the year 1939. The defendant in the reply to the legal notice dated 07.09.2022 accepted that they have labeled their goods like SAFI, the defendant has withdrawn immediately all the products from the market but their products are prominently appearing on the website of India Mart and elsewhere.
10. It is stated that the Defendant has adopted an identical/ deceptively similar trademark for identical goods i.e., blood purifier as that of the Plaintiffs, knowing Plaintiffs' goodwill, shows their dishonest adoption and the intent to encash upon the hard-earned goodwill and reputation of the Plaintiffs. Therefore, such use of the impugned mark by the Defendant is detrimental to the distinctive character, repute, and goodwill of the well-known and reputed SAFI marks. The conduct and intention of the Defendant is totally dishonest and is solely motivated to create mass deception and confusion by running a trade/ business under an identical trademark. The Defendant's activities are clearly motivated to encash upon the hard-earned reputation and goodwill of the Plaintiffs' well known and recognized trademark SAFI and its trade dress. The conduct and intention of the Defendant is totally dishonest and is solely motivated to create mass deception and confusion by running a trade/ business under an identical trademark.
CS(COMM)1068/2023 Hamdard National Foundation India & Anr. Vs. KLM Pharma 6/36
11. It is stated that the Plaintiffs in the month of May 2023 came to know and were shocked to see the products belonging to the Defendant being sold on India Mart negating the claims of the Defendant that they have stopped the usage of the impugned mark SAIFI and that they only introduced free samples. It is stated that the above-mentioned use by the Defendant of the mark SAIFI which is identical/ deceptively similar to the well-known reputed mark SAFI belonging exclusively to the Plaintiffs by way of common law rights as well as statutory protection under the Trade Marks Act, 1999 is an infringement under Section 29 of the Trade Marks Act, 1999. The above-mentioned use by the Defendant of the label SAIFI and packaging thereof in a manner which is a copy of the art work of the label, packaging SAFI the color and font scheme thereof belonging to the Plaintiffs by way of common law rights as well as statutory protection under the Copyright Act, 1957 is an infringement of Copyright under Section 51 of the Copyright Act, 1957. Comparison of the plaintiff and defendant's product are as under:
COMPARISON OF THE PLAINTIFFS' AND DEFENDANT'S PRODUCT Plaintiff's products Defendants' product CS(COMM)1068/2023 Hamdard National Foundation India & Anr. Vs. KLM Pharma 7/36 Font of the Word SAFI is black in Font of the Word SAIFI is black in colour written in capital letters. colour written in capital letters, written in same format as SAFI.
Label has parrot green background Label has parrot green background in similar manner as that of Plaintiffs Mark SAFI is depicted on the label Mark SAIFI is depicted in similar CS(COMM)1068/2023 Hamdard National Foundation India & Anr. Vs. KLM Pharma 8/36 beneath that Blood purifier manner. mentioned in red strip Pictures of herbs with pot are Pictures of identical herbs with similar appearing on the label pot are appearing on the label
12. It is stated that due to the defendants' impugned activities, the plaintiff is suffering huge losses both in business and in reputation and such losses are incapable of being assessed in monetary terms. Unwary purchasers and trade are being deceived as to the origin of goods and business. defendants' gains are plaintiff's losses. The plaintiff has no access to the defendants' accounts and the defendant is liable to render their accounts to the plaintiff and to make good to the plaintiff, the profits and business earned by them. Without prejudice to the rendition of accounts and in alternative thereto, the defendant is liable to pay damages to the plaintiff, which the plaintiff conservatively and in a restricted manner claims to the tune of Rs. 5,00,000/- even though the plaintiff is entitled to much more.
13. The plaintiff has prayed for a decree of permanent injunction, infringement of trademarks and trade dress "SAFI," passing off, rendition of accounts of profit, delivery up and damages etc.
14. Summons of the suit was served upon the defendant. Defendant has contested the suit by filing the WS.
CS(COMM)1068/2023 Hamdard National Foundation India & Anr. Vs. KLM Pharma 9/36 In the WS, defendant has taken preliminary objections that the plaintiff has not approached the court with clean hands and has not pleaded the correct facts in the plaint through concealment of material facts. It was stated that defendant was about to start the business of distributing the medicinal products namely "SAIFI" for which only 1000 bottles of free sampling were distributed on trial basis to gauge the response in the market. Defendant had no intention at any point of time to make their product appear similar to the product of the plaintiff visually, phonetically or structurally to misguide anyone. The defendant came to know about the similarity when he got the notice dated 16.02.2022 from the plaintiff and defendant immediately replied to the notice and withdrew all quantities and recalled the free samples. Defendant neither earned any profits in illegal manner nor it had ever intended to create any confusion in the minds of trade of the prospective customer of the plaintiff. It was stated that defendant never used the impugned label on the bottles/container for commercial purpose and withdrew the same immediately from the market and has seized using the impugned packaging having the marks SAIFI on the labels, bottles or anywhere else. It was further stated that u/s 28 of the Trademarks Act the plaintiff's exclusive rights to use registered trademarks is subject to limitation specially where generic terms or descriptive marks are concerned. It was stated that no infringement u/s 29 of the Trademarks Act has taken place. The plaintiff has failed to provide any conclusive evidence that the defendant's mark had adversely impacted the reputation of SAFI. The CS(COMM)1068/2023 Hamdard National Foundation India & Anr. Vs. KLM Pharma 10/36 defendant had taken steps to create a distinct trade dress and packaging for SAIFI i.e. visibly distinguishable from SAFI.
On merits, the contents of paras 1 to 6 and 13 to 18 have not been specifically denied and plaintiff has been called upon to prove the same. Contents of paras 7 to 12 and 19 to 25 and paras 34 to 50 of the plaint have been denied. In reply to paras 26 to 33 defendant has stated that the plaintiff's contentions regarding similarities in trade dress, color and labeling do not uniquely identify the plaintiff's products. A prayer has been made for dismissal of the suit with cost.
15. Plaintiff has filed the replication to the WS of defendant and reiterated the facts mentioned in the plaint. It has been stated that defendant has adopted an identical and deceptively similar trademark SAIFI along with the deceptively similar packaging to that of plaintiff's trademark. It was stated that defendant's mark is visually, phonetically as well as structurally similar to that of plaintiff's mark and thus there is likelihood of confusion among the unwary customers. Defendant is not an honest and bonafide user of the mark SAIFI. Other contents of the WS have been denied and the prayer has been made for passing a decree in favour of the plaintiff.
16. Vide order dated 19.03.2025, application u/o 39 rule 1 and 2 CPC filed by the plaintiff was allowed and defendant was restrained from using the mark SAIFI or/and any other name or label deceptively or confusingly similar to the registered trademark SAFI in CS(COMM)1068/2023 Hamdard National Foundation India & Anr. Vs. KLM Pharma 11/36 class V in any manner whatsoever.
17. After completion of pleadings, following issues were framed on 02.04.2025: -
1. Whether defendant has not infringed the copyright and trademark of the plaintiff "SAFI" in respect of blood purifier and whether defendant had only distributed the medicinal products namely SAIFI on trial basis to small retailer in rural areas? (OPD)
2. Whether the defendant has not earned any profit in illegal manner by the infringement of the trademark "SAFI" belonging to the plaintiff? (OPD)
3. Whether the plaintiff is entitled for the relief of permanent injunction as prayed for? (OPP)
4. Whether the plaintiff is entitled for rendition of accounts of the illegal profits earned by the defendant, if any on account of use of the mark SAIFI?
(OPP) CS(COMM)1068/2023 Hamdard National Foundation India & Anr. Vs. KLM Pharma 12/36
5. Whether the plaintiff is entitled for decree of damages of Rs.5 lacs as prayed for? (OPP)
6. Whether the plaintiff is entitled for decree of delivery up in respect of all the infringing articles bearing the trademark SAIFI? (OPP)
7. Relief.
Plaintiff's Evidence
18. The plaintiff examined Sh. Javed Akhtar, son of late Sh. Iqbal Ahmed, AR of plaintiff as PW-1, who has tendered his affidavit as Ex PW1/A and proved the following documents: -
Sr. Documents Exhibits
No.
1 Power of Attorney issued in favour of deponent by Ex. PW-1/2
Hamdard Foundation India (OSR)
2 Power of Attorney issued in favour of deponent by Ex. PW-
Hamdard Laboratories India (Medicine Division) 1/3(OSR)
3 Status report of the Trade Mark under registration Ex. PW-1/4
no. 241961
4 Status report of the Trade Mark under registration Ex. PW-1/5
no. 293793
5 Status report of the Trade Mark under registration Ex.PW-1/6
no. 599432
6 Trade Mark under registration no. 2532293 Ex.PW-1/7
7 Trade Mark under registration no. 5416333 Ex. PW-1/8
8 Affidavit u/s 65-B of the Evidence Act Ex.PW-1/9
CS(COMM)1068/2023 Hamdard National Foundation India & Anr. Vs. KLM Pharma 13/36
9 Photocopy of copyright registration no. A- Mark PW-1/A
111542/2014
10 Copyright certificate under registration no. A- Mark PW-1/B
52736/95
11 Sales and advertisement figure certified by CA Ex.PW-
1/10(OSR)
12 Photocopies of 108 invoices proving the use of mark Mark PW-1/C
SAFI by the plaintiff (colly)
13 Photocopies of various articles /write-ups and Mark PW-1/D
promotional material on the product SAFI as well as various websites promoting and advertising SAFI 14 Reply dated 07.03.2022 to the cease-and-desist Ex. PW-1/11 notice 15 Printout of the plaintiffs' website Ex. PW-1/12 16 Printout of plaintiffs' product on Amazon Ex.PW-1/13 17 Printout of plaintiffs' product on Tata 1mg Ex. PW-1/14 18 Printout of plaintiffs' product on Appollo Pharmacy Ex.PW-1/15 19 Printout of plaintiffs' product on Flipkart Ex. PW-1/16 20 Printout of plaintiffs' product on Big Basket Ex. PW-1/17 21 Printout of plaintiffs' product on Netmeds Ex.PW-1/18 22 Printout of plaintiffs' product on Jiomart Ex. PW-1/19 23 Printout of plaintiffs' product on Healthmug Ex.PW-1/20 24 Printout of plaintiffs' product of Nykaa Ex. PW-1/21 25 Printout of plaintiffs' product on Pharmeasy Ex.PW-1/22 26 Printout of plaintiffs' product on Blinkit Ex.PW-1/23 27 Copy of defendant's product on Indiamart Ex.PW-1/24 28 Copy product on Indiamart Ex. PW-1/25 29 Photocopy of the cease-and-desist notice dated Ex. PW-1/26 16.02.2022 PW-1 was cross examined by counsel for the defendant. PW-1 in his cross examination has deposed that there was no oral or CS(COMM)1068/2023 Hamdard National Foundation India & Anr. Vs. KLM Pharma 14/36 written communication with the defendant since 07.03.2022 when reply was received from the defendant to the notice issued by the plaintiff. He further deposed that the product of the defendant 'SAIFI' was available on India Mart when they had checked the same in the year 2022 and he does not have any receipt or proof regarding sale of impugned product by the defendant except for the information available on India Mart and from the feedback received from Marketing and Sales Department. He also deposed that he could not say if sales, marketing/legal team ever attempted to purchase impugned product from the defendant against invoice. He denied the suggestion that after reply dated 07.03.2022 of defendant Ex.PW-1/11, the cause of action ceased to exist. He deposed that he did not check if the impugned product of defendant was available on Amazon India, Tata 1mg, Apollo Pharmacy, Flipkart, Big Basket, Netmeds, Jiomart, Healthmug, Nykaa, Pharmeasy, Blinkit (Ex.PW-1/13 to Ex.PW-1/23). He also deposed that he has no knowledge if defendant had obtained commercial benefits from the impugned product and he could not say if any person known to him had purchased the impugned products. He denied the suggestion that defendant had not launched any product similar to SAFI or that defendant had not taken any commercial benefit from the impugned product SAIFI or that after reply to the notice of the plaintiff, defendant did not manufacture, sell, and advertise the impugned product on any web portal or physically in the market. Thereafter, PE was closed.
CS(COMM)1068/2023 Hamdard National Foundation India & Anr. Vs. KLM Pharma 15/36
19. The defendant examined Ms. Seema Agarwal, proprietor of defendant as DW-1, who has tendered her affidavit as Ex DW1/A and proved the following documents: -
Sr. Document Exhibit
No.
1 Registration Certificate Ex. DW-1/1
2 Reply dated 07.03.2022 to the legal notice dated Ex. DW-1/2
16.02.2022
3 Bank Statement and Balance Sheet of the defendant Ex. DW-1/3
company (OSR)
4 GST details of the product SAIFI Ex. DW-1/4
5 Affidavit u/s 63 of BSA 2023 Ex. DW-1/5
DW-1 was cross examined by the counsel for the plaintiff. Perusal of cross examination of DW-1 shows that she has admitted that defendant firm had adopted the impugned mark SAIFI for manufacturing the sample of blood purifier. She also deposed that her son Vishal Aggarwal was looking after the entire business and she was not aware about the motive behind manufacturing the sample of blood purifier. She also deposed that her son had done due diligence before adopting the mark but she had not done any due diligence in this regard. She deposed that she was not aware about the due diligence whether done or not done in case of impugned mark SAIFI. She also deposed that her son had got the labels and packaging prepared before distribution of sample.
20. Defendant also examined her son Sh. Vishal Agarwal as DW-2, CS(COMM)1068/2023 Hamdard National Foundation India & Anr. Vs. KLM Pharma 16/36 who has tendered his affidavit as Ex DW2/A and proved the following documents: -
Sr. Document Exhibit
No.
1 Registration Certificate Already Ex.
DW-1/1
2 Reply dated 07.03.2022 to the legal notice dated Already Ex.
16.02.2022 DW-1/2
3 Bank Statement and Balance Sheet of the defendant Already Ex.
company (OSR) DW-1/3
4 GST details of the product SAIFI Already Ex.
DW-1/4
5 Affidavit u/s 63 of BSA 2023 Already Ex.
DW-1/5
In the cross examination by counsel for the plaintiff, DW-2 admitted that he is looking after the business of defendant firm. He had checked on the google about the name SAIFI and there was no such product available with the said name. He deposed that he does not remember if he had done due diligence from Trademark Registry or not. DW-2 further deposed that he had given the name, details of his products and its ingredients to the designer, who had made the label for the same. He further deposed that the designer had not told him that plaintiffs are using similar design in respect of the product SAFI. He deposed that there was no basis for choosing the name SAIFI and it was done randomly. He also deposed that the sample product was manufacturing for testing its efficacy. He admitted that the advertisement of the sample product was placed on India Mart at CS(COMM)1068/2023 Hamdard National Foundation India & Anr. Vs. KLM Pharma 17/36 about the same time and the product was registered on India Mart to sell the same. He deposed that the product was removed from the website India Mart after some time of reply Ex. DW-1/2 but could not tell the date and time when it was removed. When he was shown screenshot of India Mart dated 04.02.2025 he admitted that the product of the defendant is seen at the website India Mart and volunteered that the screenshot show that product was currently unavailable. He further deposed that February/March 2025 he again contacted the customer care of India Mart and as per their instructions he had deleted the product from the website by following the due process which is required to delete the product from the website. Thereafter DE was closed.
21. I have heard Ld. Counsel for the plaintiff Mr. Shivendra Pratap Singh and Ms. Mehak Khanna and Ld. Counsel Mr. Anil Yadav for the defendant and have gone through the record carefully including the written submissions filed by the counsel for the plaintiff as well as defendant.
FINDINGS Issue no.1.
Whether defendant has not infringed the copyright and trademark of the plaintiff "SAFI" in respect of blood purifier and whether defendant had only distributed the medicinal products namely SAIFI on trial basis to small retailer in rural areas? (OPD) CS(COMM)1068/2023 Hamdard National Foundation India & Anr. Vs. KLM Pharma 18/36
22. The onus to prove this issue has been cast on the defendant. Counsel for the defendant has argued that defendant use of mark SAIFI for small sample trial in 2022 was bonafide, limited and entirely non-commercial in nature. It was adopted solely for the purpose of market sampling with approximately 1000 free sample bottles being distributed in the rural areas. It was argued that AR of the plaintiff during his cross examination admitted that neither he nor any employee of the plaintiff company has any receipt of purchase, physical sample or proof regarding commercial sale of impugned product. PW-1 also confirmed that after 07.04.2023 India Mart website was not checked and no feedback was collected after that date. It was argued that the defendant immediately deleted the listing at India Mart after replying to the legal notice on 07.03.2022. It was argued that mere issuance of free samples without evidence of sale, does not amount to "use in the course of trade" to constitute infringement. Reliance was placed on the judgment of FDC Limited Vs. Faraway Foods Pvt. Ltd. 2016 (68) PTC72 (Delhi). It was further argued that there was no infringement under section 29 of the Trademarks Act 1999 which requires that use must be in the course of trade and likely to cause confusion. Counsel for the defendant also relied on the judgment M/s. Veerumal Praveen Kumar Vs. M/s. Needle Industries (India) Ltd 93(2001) DLT 600 to argue that mere registration or isolated instances of use such as issuing free samples without subsequent sale do not constitute "use in the course of trade"
under section 29 of Trademarks Act, 1999. It was argued that CS(COMM)1068/2023 Hamdard National Foundation India & Anr. Vs. KLM Pharma 19/36 defendant has not infringed the copyright and trademark of the plaintiff's product SAFI in respect of the blood purifier.
23. Per contra, counsel for the plaintiff has argued that plaintiff is the registered proprietor of trademark SAFI. PW-1 has proved the registration obtained by the plaintiff from the trademark registry as Ex.PW-1/1. He argued that the product of the plaintiff has accrued enormous goodwill towards the mark SAFI due to its long usage and high-quality product namely blood purifier, so much so the same is exclusively associated with the plaintiff's source alone. Reliance was placed on the judgment of Registrar of Trademarks Vs. Hamdard National Foundation (India) AIR 1980 Delhi 180, wherein para 7 of the judgment, it was held that by constant use of the trademark SAFI for such a long time, the respondents can legitimately claim that this trademark is almost exclusively connected with their goods. It is also argued that the word SAFI by its long and regular use has acquired a secondary meaning to the products of the plaintiff. It was also argued that in a suit for infringement the test is of the point of view of person having average intellect and imperfect recollection, who would be received by looking at the impugned mark SAIFI of the defendant as it is phonetically, visually, and structurally similar to the well-known mark SAFI of the plaintiff. Reliance was placed on the judgment of Hamdard National Foundation (India) & Anr. Vs. Star Pharmaceuticals suit no.758/1989 decided by Hon'ble High Court of Delhi on 08.04.1992, wherein the product Sufina was injuncted being CS(COMM)1068/2023 Hamdard National Foundation India & Anr. Vs. KLM Pharma 20/36 deceptively similar with the trademark SAFI of the plaintiff.
24. Counsel for the plaintiff argued that the adoption of the impugned mark SAIFI by the defendant is dishonest and with the motive of overriding the goodwill accrued to the trademark SAFI of the plaintiff. Defendant has not only adopted a deceptively similar trademark having similar get up, color combination and placement of devices but the same was also posted on India Mart offering for sale which is a clear-cut case of commercial use. It was argued that the advertisement with the intention to use the mark amounts to use in the course of trade and business. He argued that DW-1 in her cross examination has admitted that defendant firm adopted the impugned trademark SAIFI. DW-2 Vishal Aggarwal in his cross examination has deposed that he does not remember if he had done due diligence from trademark registry. He also deposed that there was no basis for choosing the name SAIFI and it was done randomly. It was argued that the product of the defendant was still being shown on India Mart on 04.02.2025 at 7 PM despite the claim of the defendant that the product was got removed from the website India Mart after some time of reply Ex.DW-1/2.
25. From the perusal of evidence adduced by the parties and documents proved on record, the plaintiff has established that the product of the plaintiff has been registered with the Trademark Registry since 1967 as a word mark and since 1974 as a device mark.
CS(COMM)1068/2023 Hamdard National Foundation India & Anr. Vs. KLM Pharma 21/36 The plaintiff has also proved on record the certificate from the Register of Copyright which shows that the mark of the plaintiff is also registered with the Copyright Registry. On the other hand, it is an admitted case of the defendant that the impugned trademark SAIFI was adopted somewhere in the year 2022. A bare comparison of the products of the plaintiff and defendant would show that the impugned product of the defendant 'SAIFI' is deceptively similar to the product of the plaintiff SAFI phonetically, visually, and structurally. Not only this the trade dress up of the impugned product of the defendant is deceptively similar to that of the product of the plaintiff.
26. The defendant has raised a defence that mere issuance of free samples without evidence of sale, does not amount to 'use in the course of trade' and therefore, do not constitute infringement within the meaning of section 29 of the Trademark Act. The defendant also claimed protection under section 30 and 35 of the Trademark Act on the ground that the defendant had used the impugned mark in a bona fide manner and did not take any unfair advantage of or be detrimental to the distinctive character or repute of a trademark.
However, perusal of testimony of DW-2 Vishal Aggarwal itself shows that before adopting the impugned mark he did not conduct due diligence from the Trademark Registry nor he did any due diligence with regard to the design prepared by the designer which shows that the defendant did not act bonafide. Had the intention of defendant being bonafide, it would have conducted due diligence CS(COMM)1068/2023 Hamdard National Foundation India & Anr. Vs. KLM Pharma 22/36 before adopting the impugned trademark.
27. The defence raised by the defendant that defendant did not make any commercial use of the product and only few samples were launched in the market to test the efficacy of the product also appears to be devoid of any merits. It is not in dispute that defendant has been doing the business since 2019. It is beyond comprehension as to why the defendant adopted the impugned trademark which is deceptively similar to the trademark of the plaintiff when the only intention of the defendant was to test its product in the market and why defendant listed the said product on the website India Mart for sale even before the testing of the product was completed. In my considered opinion, listing of the product for advertisement on the website India Mart as an introductory campaign, prior to putting its product in the market under the impugned trademark but before they were actually introduced in the market would also amount to 'use in the course of trade'. Hence, it cannot be said that the conduct of the defendant was bonafide or in the absence of the evidence of sale, there was no infringement by the defendant.
28. In view of the aforesaid discussion, I am of the considered opinion that defendant has failed to discharge the onus cast on it. The issue is accordingly decided in favour of the plaintiff and against the defendant.
CS(COMM)1068/2023 Hamdard National Foundation India & Anr. Vs. KLM Pharma 23/36 Issue no.2:
Whether the defendant has not earned any profit in illegal manner by the infringement of the trademark "SAFI" belonging to the plaintiff? (OPD)
29. The onus of proving this issue was cast on the defendant. Counsel for the defendant has argued that defendant did not earn any profit from the said activity and in fact, no sales were ever made and this fact is also substantiated by the bank statement and the balance sheet of the defendant firm produced by the DW-1 as Ex. DW-1/3. It was also argued that PW-1 in his cross examination has admitted that he had no knowledge about the commercial advantage taken by the defendant from its impugned product 'SAIFI'. PW-1 also admitted that he or any of his employee had purchased the impugned product as a proof of commercial sale. He also could not tell if any person known to him had purchased the impugned product. However, he denied the suggestion that defendant had not taken commercial benefits from the impugned product.
30. Counsel for the plaintiff has argued that the defendant not only adopted the impugned product in mala fide manner, but also posted the same on India Mart for sale which is a clear-cut case of commercial use. It was argued that the presence of such goods listed on India Mart platform contradicts his claim and establishes his intention to offer the said product for sale in the course of trade.
CS(COMM)1068/2023 Hamdard National Foundation India & Anr. Vs. KLM Pharma 24/36
31. No doubt, advertising a product on a website or a portal for sale shows the intention of the defendant to use the product for commercial purposes but in the absence of any evidence to show that the defendant has actually sold its impugned product, it cannot be said that defendant had earned profit in illegal manner by infringement of the trademark SAFI belonging to the plaintiff. The bank statement and the balance sheet Ex. DW-1/3 and the GST details Ex. DW-1/4 filed by the defendant does not establish any sale of the impugned product by the defendant. Hence, I am of the considered opinion that in the absence of proof of actual sale of the impugned product SAIFI by the defendant, it cannot be said that defendant has earned illegal profits from the sale of the said product. The issue is accordingly decided in favour of the defendant and against the plaintiff.
Issue no.3:
Whether the plaintiff is entitled for the relief of permanent injunction as prayed for? (OPP)
32. The onus of proving this issue has been cast on the plaintiff. Counsel for the plaintiff has argued that the defendant adopted the impugned mark SAIFI for its blood purifier which is deceptively similar to the registered trademark of the plaintiff SAFI. It was argued that the defendant also adopted the trade dress up/packaging which is identical/deceptively similar to the registered trademark of the plaintiff having the same color scheme, pictorial depiction, and use of CS(COMM)1068/2023 Hamdard National Foundation India & Anr. Vs. KLM Pharma 25/36 same color combination. It was further argued that plaintiff has examined PW-1 Javed Akhtar, who has proved on record the trademark registration certificate of the plaintiff in respect of its product SAFI as Ex.PW-1/4 to PW-1/8 and copyright registration as mark PW-1/A to PW-1/B. The plaintiff has further produced the invoices mark 'C' to prove the use of the registered trademark SAFI by the plaintiff and the print outs of various websites/platforms as Ex.PW-1/12 to Ex.PW-1/23. PW-1 has also proved on record the copy of the defendant's product on India Mart as Ex.PW-1/24 and 25. He submitted that the plaintiff issued the cease-and-desist notice Ex.PW- 1/26 to the defendant which was replied by the defendant on 07.03.2022 and copy of the same has been proved as Ex.PW-1/11. He argued that a bare perusal of the reply given by the defendant would show that defendant has admitted the manufacturing of medicinal products namely 'SAIFI' and it is claimed that defendant unintentionally labeled the said product like SAFI and had no intention to copy the registered brand of the plaintiff and when he came to know that the impugned products look similar to the product of SAFI of the plaintiff. It immediately withdrew all quantity and recall the free samples and also gave undertaking not to use the trademark identical/similar trademark of SAFI. It was argued that this reply is a clear admission on the part of the defendant that it had infringed the trademark and copyright of the plaintiff in the product SAFI.
CS(COMM)1068/2023 Hamdard National Foundation India & Anr. Vs. KLM Pharma 26/36
33. Per contra, counsel for the defendant has argued that there was no infringement of trademark of the plaintiff under Section 29 of The Trademarks Act 1999 as the impugned product was never used by the plaintiff in the course of trade which is likely to cause confusion in the minds of the public. It was also argued that mere similarity of names is not sufficient unless it causes real confusion in the minds of consumers. It was also argued that the defendant had only manufactured small quantity of the product to be distributed as free sample and the same was also withdrawn after the legal notice Ex.PW-1/26 issued by the plaintiff. Therefore, there is no infringement of the trademark of the plaintiff by the defendant.
34. Defendant has not disputed the fact that plaintiff is the registered proprietor of the trademark 'SAFI' which is a blood purifier. It is also not in dispute that defendant had also manufactured the product which is also a blood purifier. The defendant adopted the trade name 'SAIFI' for its product which is deceptively similar to the trade name of the plaintiff SAFI not only phonetically but also in the selection of the font, color and appearance. The packaging adopted by the defendant for its product it also almost identical and deceptively similar to that of the registered trade mark of plaintiff including the same color scheme, trade dressing and pictures appearing on the packaging as can be seen from side-by-side comparison of the two products as under: -
CS(COMM)1068/2023 Hamdard National Foundation India & Anr. Vs. KLM Pharma 27/36
35. This court in its earlier discussion on issue no. 1 hereinabove has already rejected the defence taken by the defendant and has come to the conclusion that defendant has infringed the registered trademark of plaintiff. Hence, in view of the judgment of Hon'ble Supreme Court in Midas Hygiene Industry Pvt. Ltd. & Anr. Vs. Sudhir Bhatia & Ors.2004 (28) PTC 121 (SC), the plaintiff is entitled for the relief of injunction as claimed by it. Accordingly, the issue is decided in favour of the plaintiff and against the defendant.
Issue no.4 and 5:
4.Whether the plaintiff is entitled for rendition of accounts of the illegal profits earned by the defendant, if any on account of use of the mark SAIFI? (OPP)
5. Whether the plaintiff is entitled for decree of damages of Rs.5 lacs as prayed for? (OPP) CS(COMM)1068/2023 Hamdard National Foundation India & Anr. Vs. KLM Pharma 28/36
36. These issues are taken up together as they can be disposed of by common discussion.
The plaintiff has prayed for a decree of rendition of accounts by the defendant for the profits received by selling the infringing goods of the plaintiff company and further for grant of damages. The plaintiff has also prayed for damages of Rs. 5 Lakhs against the defendant towards the estimated loss of revenue by the plaintiff as also the loss of reputation and goodwill due to illegal activities of the defendant.
37. Counsel for the plaintiff has argued that the plaintiff has suffered substantial losses due to the infringing and illegal activities carried out by the defendant by falsifying the trademark SAFI of the plaintiff and packaging thereof to deceive the customers of the plaintiff and also diluting the goodwill and reputation of the trademark of the plaintiff company. It was argued that the products of the plaintiff and the defendant are identical i.e. blood purifier, the customer base as well as the market of the plaintiff and defendant is also identical and defendant had adopted the impugned trademark with the sole intention to confuse the customers by putting its advertisement on the website India Mart.
38. Per contra, counsel for the defendant has argued that the defendant never sold the impugned product and only small samples of about 1000 bottles of blood purifier were manufactured by the CS(COMM)1068/2023 Hamdard National Foundation India & Anr. Vs. KLM Pharma 29/36 defendant to gauge the market. The samples were distributed free of cost on trial basis. The defendant immediately stopped the production and the samples were recalled after receipt of legal notice Ex.PW- 1/26 and no profits were earned by the defendant. It was argued that defendant has placed on record its bank statement along with the balance sheet as Ex. DW-1/3 which shows that no profits were earned by the defendant. It was argued that the products of the defendant were not available in the market and this fact is also fortified from the statement of PW-1, who admitted in his cross examination that no sample purchase of impugned product was made by the plaintiff from the market and he could not say that the sales and marketing/legal team ever attempted to purchase the impugned product of the defendant against the invoice.
39. In the present case, even though the plaintiff has established that defendant had infringed the registered trademark of the plaintiff, but no sample purchase of the impugned product was made by the plaintiff nor any such sample was produced by the plaintiff before the court. The plaintiff has also not examined any witness to substantiate its claim that the impugned product of the defendant was available for sale in the market. In fact, PW-1 in his cross examination deposed that he did not check if the impugned product of defendant was available on the websites such as Amazon India, Tata 1mg, Apollo Pharmacy etc. for sale or not and he did not have any knowledge if defendant had obtained any commercial benefit from the impugned CS(COMM)1068/2023 Hamdard National Foundation India & Anr. Vs. KLM Pharma 30/36 product. The defendant has produced its bank statement as well as balance sheet as Ex. DW-1/3 but in the cross examination of DW-1 and DW-2, these witnesses were not confronted with any portion of the bank statement or balance sheet to show that defendant had earned illegal profit from the sale of impugned product in the market.
40. Hence, in my considered opinion, in the absence of any positive evidence to show that defendant had earned illegal profits from the sale of impugned product 'SAIFI,' it is not possible to award a decree of rendition of accounts of profits illegally earned by the defendant by the use of impugned product SAIFI which is deceptively similar or identical to the registered trademark of the plaintiff.
41. The plaintiff has claimed damages to the tune of Rs. 5,00,000/- against the defendant towards the loss of revenue and also loss of reputation and goodwill owing to the illegal activities of the defendant. In the absence of any proof that defendant sold the impugned product in the market and illegally earned profit, I am of the considered opinion that plaintiff is only entitled for damages for the loss of reputation and goodwill owing to the infringement of registered trademark SAFI of the plaintiff.
42. Hon'ble High Court of Delhi in the case of Microsoft Corporation v. Rajendra Pawar & Anr. reported as 2008 (36) CS(COMM)1068/2023 Hamdard National Foundation India & Anr. Vs. KLM Pharma 31/36 PTC 697 (Del.), considering the aspect of punitive damages, it was held as below: -
"22. Perhaps it has now become a trend of sorts, especially in matters pertaining to passing off, for the defending party to evade Court proceedings in a systematic attempt to jettison the relief sought by the Plaintiff. Such flagrancy of the Defendant's conduct is strictly deprecatory, and those who recklessly indulge in such shenanigans must do so at their peril, for it is now an inherited wisdom that evasion of Court proceedings does not de facto tantamount to escape from liability. Judicial Process has its own way of bringing to task such erring parties whilst at the same time ensuring that the aggrieved party who has knocked the doors of the Court in anticipation of justice is afforded with adequate relief, both in law and in equity. It is here that the concept of awarding punitive damages comes into perspective.
23. Punitive damages are a manifestation of equitable relief granted to an aggrieved party, which, owing to its inability to prove actual damages, etc.,could compensated not by be adequately the Court. Theoretically as well as practically, the practice of awarding of punitive damages may be rationalized as preventing under compensation of the aggrieved party, allowing redress for undetectable torts CS(COMM)1068/2023 Hamdard National Foundation India & Anr. Vs. KLM Pharma 32/36 and taking some strain away from the criminal justice system. Where the conduct of the erring party is found to be egregiously invidious and calculated to mint profits for his own self, awarding punitive damages prevents the erring party from taking advantage of its own wrong by escaping prosecution or detection."
43. Hon'ble High Court in Larsen and Toubro Limited Vs. Chagan Bhai Patel reported at MIPR 2009(1)194 observed that it would be encouraging the violators of intellectual property, if the defendants, notwithstanding having contested the suit, are not burdened with punitive damages.
44. This court finds itself in agreement with the submissions of Ld. Counsel for the plaintiff that damages in such cases must be awarded and defendant should not be let off merely on the ground that plaintiff has not been able to prove the loss of revenue when the infringement of the registered trademark of the plaintiff has been established by the plaintiff. There is a larger public purpose involved to discourage such parties from indulging in the acts of deception and thus even if the same has a punitive element, it must be granted. Accordingly, I deem it appropriate to grant punitive damages of Rs.1,00,000/- in favour of the plaintiff and against the defendant. In view of the aforesaid discussions, the issues are accordingly decided in favour of the plaintiff and against the defendant.
CS(COMM)1068/2023 Hamdard National Foundation India & Anr. Vs. KLM Pharma 33/36 Issue no.6:
Whether the plaintiff is entitled for decree of delivery up in respect of all the infringing articles bearing the trademark SAIFI? (OPP)
45. The onus of proving this issue was upon the plaintiff. The defendant has admitted in the WS as well as reply to the legal notice that it had manufactured about 1000 bottles of impugned product 'SAIFI' for free sampling which were distributed on trial basis gauge the response of the market for distribution to small retailers in the rural area. Defendant has also admitted that when it came to know about the similarity of its product with the product of the plaintiff through legal notice dated 16.02.2022, it had withdrawn all the quantities and had also recalled the free samples. Even during the course of evidence DW-2 Vishal Agarwal has admitted these facts. In the absence of any permission by the plaintiff company, the defendant had no right to infringe the registered trademark of the plaintiff by using impugned product SAIFI which is identical/deceptively similar to the product of the plaintiff. Hence, in my considered opinion, the plaintiff is entitled for the relief of delivery up of the infringed goods as prayed for. The issue is accordingly decided in favour of the plaintiff and against the defendant.
Relief:
46. In view of my findings on the issues herein above, the suit is CS(COMM)1068/2023 Hamdard National Foundation India & Anr. Vs. KLM Pharma 34/36 decreed in favour of the plaintiff and against the defendant with costs.
A decree of permanent injunction is passed in favour of the plaintiff and against the defendant restraining the defendant, its proprietor, their principal officers, servants, agents and all others acting for and on behalf of the defendant from using the mark SAIFI and/or any other name or label deceptively or confusingly similar to the registered trademark SAFI of the plaintiff, in any manner and for any goods and services particularly for Unani pharmaceutical products. The defendant is further restrained from passing off their impugned product SAIFI, using the trade dress of plaintiff and using the label/cartons/packaging similar to the product of the plaintiff SAFI amounting to passing off the product of the plaintiff.
Defendant is further directed to immediately deliver all the infringing finished and unfinished material which is deceptively similar to the trademark of the plaintiff including labels, catalogue, brochures, publicity material, sticker and any other material bearing the mark 'SAIFI' which is deceptively similar to the plaintiff's mark 'SAFI' to the representative of the plaintiff company and the plaintiff shall destroy such infringing material within a week of its receipt.
47. The defendant is directed to pay damages of Rs. 1,00,000/- to the plaintiff within one month from the passing of this judgment failing which, said amount shall carry simple interest @ 9% p.a. from date of decree, till realization. Plaintiff is also entitled to costs of suit as prayed for.
CS(COMM)1068/2023 Hamdard National Foundation India & Anr. Vs. KLM Pharma 35/36 Decree sheet be prepared accordingly. File be consigned to ANIL Digitally signed by Record Room.
ANIL KUMAR SISODIA
KUMAR Date: 2025.06.04
SISODIA 16:37:29 +0530
(ANIL KUMAR SISODIA)
District Judge (Commercial Court)-04
Central/Delhi
Announced in open court
on 04.06.2025
CS(COMM)1068/2023 Hamdard National Foundation India & Anr. Vs. KLM Pharma 36/36